EXCO/FR22/RES/001
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
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Resolution of the Executive Committee
Cannes, France, 25 to 29 September 2022
“
Complete Examination
”
FICPI
, the International Federation of Intellectual Property Attorneys, broadly representative
of the free profession throughout the world, assembled at its Executive Committee at the
World Congress held in Cannes, France, 25 to 29 September 2022, passed the following
resolution:
NOTING
that many technologies being examined for patent protection, including both
emerging and traditional, face subject matter eligibility
, internal issue
and prior art
rejections,
FURTHER NOTING
that in some jurisdictions, examination reports are being issued that are
incomplete, by raising a first set of substantive issues that must be dealt with before moving
on to a second set of substantive issues,
RECOGNISING
that such incomplete examination can be particularly troublesome when one
of these sets of substantive issues involves subject matter eligibility, for example the applicant
may overcome the cited prior art only to then face a challenging subject matter eligibility
rejection (or vice versa) that requires further consideration of claim amendments,
FURTHER RECOGNISING
that dealing with substantive issues one at a time due to an
incomplete examination of a patent application can lead to prolonged prosecution,
unnecessary claim limitations, and increased costs to the applicant,
URGES
Patent Offices to avoid incomplete examination of applications and conduct a
complete and comprehensive examination of all substantive issues, including subject matter
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Also referred to as “technical effect” and “inventive contribution”
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Such as clarity, sufficiency and enablement
“
Complete Examination”
EXCO/FR22/RES/001
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
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eligibility, internal issue and prior art rejections in a single substantive examination report,
and
FURTHER URGES
that should a Patent Office wish to allow applicants to defer consideration
of a substantive issue of patentability, such deferment is voluntary and an invitation to do so
is only made after the Patent Office has conducted a complete and comprehensive
examination and identified all substantive issues in a single substantive examination report.